Why is it necessary to enter into an agreement between authors and patent holders before registering a patent?

The problem

Patent attorneys are often approached by deceived clients who find out that the co-authors of their development include people they hardly know and who have nothing to do with the patented solution. For example, an employer, after an employee is fired or retires, stops paying him the remuneration that he had previously paid regularly, or a company director lists himself as the author and applicant of a service invention, and when leaving for another company, takes the exclusive rights to the manufactured product with him.

As a rule, all problems are related to an illiterate approach, independent registration without involving patent attorneys and the absence of preliminary agreements between all participants in the development of the results of the intellectual activity, who created the product/technology/item, tested it, sponsored it, provided technical support, etc.

The differences between copyright and exclusive rights. Who owns what right?

The author of an invention, utility model or industrial design is recognized as a citizen whose creative work created the corresponding result of intellectual activity.

Thus, an individual indicated as the author in an application for a patent for an invention, utility model or industrial design is considered the author of the invention, utility model or industrial design, unless proven otherwise. There may be one or more authors, if each of them made a creative contribution to the development.

The copyright holder is recognized as an individual or legal entity, or a group of individuals who have exclusive rights to the result of intellectual activity, who have the right to use such result at their own discretion in any way that does not contradict the law.

Automatically, the right to obtain a patent belongs to the author, and can be transferred to another person on the basis of an agreement on the assignment of rights to obtain a patent. However, many people do not sign anything, but simply agree verbally that the one who came up with the idea is indicated as the author, and the one who provided the opportunity to verify the implementation of the solution, provided financial and technical support and then, for example, plans to produce and commercialize - the applicant, and subsequently, upon receiving a positive decision on the issuance of a patent, the right holder.

At the same time, they do not realize that a patent may be declared invalid by a court if it is proven that when the patent was issued, the person indicated in it as the author or patent holder is not such, or the person who is such is not indicated in the patent as the author or patent holder.

Recommendations

Therefore, before filling out an application for patent registration, persons directly related to the patented solution should be careful to correctly indicate persons related to both the authors and the applicants, including if the registration is carried out by an authorized person, for example, a patent attorney. Often, those filing an application for patent registration with the Rospatent do not check whether preliminary agreements have been established between the authors and applicants, while informing the principal that all relations with the authors must be properly formalized and regulated, including in terms of payment of royalties, and that improperly formalized relations between the principal and the authors may subsequently lead to the cancellation of the patent.

Thus, it is necessary to discuss the conditions and procedure for further interaction in advance, concluding a corresponding agreement between all parties involved. Such an agreement should be concluded not only between the authors and applicants, but also in the case of involving designers, IT specialists, test plants / research laboratories, etc. organizations, between applicants and sponsors / investors, between co-authors and co-applicants, if they do not assume equal rights between themselves (in the case of authors, for example, to equal author's remuneration, since the contribution was not proportional).

If the application specifies several applicants, then upon receipt of the patent, all of them will be equal patent holders, unless otherwise provided by the agreement. Thus, they must jointly dispose of the exclusive right, and this refers not only to actions to conclude agreements regarding the exclusive right, but also to actions that determine the future fate of the exclusive right: applications for extension of the patent term or early termination of the patent term.

In connection with the above, the settlement of relations allows avoiding cases of abuse of rights by one of the patent holders.

Therefore, only the conclusion of an agreement between the copyright holders can change the requirements for the procedure for the exercise by all copyright holders of their exclusive rights, for example, one of which may be voluntarily limited in part of his rights.

In a situation when a developer, based on a technical assignment, contacts an organization that will design (for example, bring a solution to a real implementation) option in a prototype, it is possible to protect oneself with a custom-made contract.

Since the legislation protects the author's personal non-property rights to the name, the right of authorship and the right to inviolability, the author's commission agreement must resolve the issue of the procedure for their implementation. The author undertakes to create and transfer to the customer in full or in a part specified in the customer's assignment, with the simultaneous alienation to the customer of the exclusive right to such a product in full, and the customer undertakes to accept the product and the exclusive right to it and pay for the order.

In this case, the author agrees to: the use of the product created by him by the customer without indicating the name of the author with each such use, the use of the product created by him under any name that the customer deems necessary to use, the introduction of any other changes to the product created by him.

In a situation where an employee has invented a technical solution or developed, for example, a design in connection with the performance of his work duties (under an employment contract) or a specific assignment from the employer (order), then such a decision is already considered official.

In this case, it is the employee who will have the right of authorship to the service invention, utility model or industrial design, and it is he who must be indicated in the application as such.

The exclusive right to an official decision and the right to receive a patent belong primarily to the employer, unless otherwise provided by the employment or civil law contract between the employee and the employer.

In the absence of a contract, the employee may only claim remuneration. The amount of remuneration, the terms and procedure for its payment by the employer are also determined by the contract between him and the employee, and in the event of a dispute - by the court.

The remuneration is paid until the expiration of the patent, therefore, if the employer decides to terminate the patent early, he is obliged to notify the employee who is the author, since she has the right to demand that the patent be transferred to him free of charge.

To sum up, it is better to settle all issues that arise before filing a patent application with the Rospatent by signing relevant agreements between the parties involved in the development of a technical or design solution and its subsequent implementation, and even better, to contact lawyers who have proven themselves in this matter.